Infogroup, Inc. et al v. DatabaseLLC et al

Filing 443

ORDER granting in part and denying in part 337 Motion in Limine; granting in part and denying in part 404 Motion in Limine; granting in part and denying in part 406 Motion in Limine. Infogroup's misappropriation of trade secrets claim is dismissed with prejudice. Ordered by Judge John M. Gerrard. (DCD)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
Infogroup, Inc.,
Plaintiff and
Counterclaimdefendant,

8:14-CV-49

vs.
DatabaseUSA.com LLC,

MEMORANDUM AND ORDER

Defendant and
Counterclaimant,
Vinod Gupta,
Defendant.
This matter is before the Court on defendants DatabaseUSA's and Vinod
Gupta's (collectively, "DatabaseUSA") motions in limine, (filing 337, filing
406), Infogroup's motion in limine (filing 404), and Infogroup's motion to
determine admissibility (filing 404). As set forth below, the Court will grant
those motions in part, and deny those motions in part.
I. INFOGROUP'S MOTIONS
A. DatabaseUSA's Failure to Disclose its Damages Computations for its
Counterclaims
To begin, Infogroup objects to any "reference to monetary damages
relating to [DatabaseUSA's] counterclaims." Filing 404 at 1. According to
Infogroup, DatabaseUSA has yet to disclose any, much less sufficient,

information concerning their purported monetary damages computation. And
DatabaseUSA admitted that––at least as of the date of the hearing at the pretrial conference––it had not, in fact, disclosed this information.
DatabaseUSA was required to disclose "a computation of each category
of damages claimed" in its initial disclosures. Fed. R. Civ. P. 26(a)(1)(A)(iii).
DatabaseUSA was also required to supplement those disclosures if, at any
point during discovery, the initial disclosure was no longer complete or correct.
Fed. R. Civ. P. 26(e)(1)(A). And under Fed. R. Civ. P. 37(c)(1), exclusion of
evidence not disclosed is appropriate unless a party shows that failure to
comply with Rule 26(a) or 26(e) was substantially justified or harmless.
To determine whether a failure to disclose was justified or harmless the
Court considers four factors: (1) the importance of the excluded material; (2)
the explanation for failing to comply with the disclosure rules; (3) the potential
prejudice from allowing the material to be used at trial; and (4) the availability
of a continuance to cure such prejudice. Citizens Bank v. Ford Motor Co., 16
F.3d 965, 966 (8th Cir. 1994). All the available factors weigh against
DatabaseUSA––which offered the court no reason as to why it did not, or could
not, disclose its computation of damages. In other words, DatabaseUSA's
failure to disclose its counterclaim damages was neither substantially justified
nor harmless. As such, the Court will grant Infogroup's motion in limine on
this issue.
B. Blake Van Gilder
Infogroup seeks to exclude any and all "reference[s] to claims asserted
against Blake Van Gilder, Infogroup or Koley Jessen P.C., L.L.O., or its
attorneys, in DatabaseUSA.com, LLC’s suit against Infogroup and Koley
Jessen . . . . " Filing 404 at 1. Infogroup also seeks to preclude evidence of
2

"Blake Van Gilder’s non-felony criminal convictions or arrests, or his mental
and emotional conditions and treatments."
The Court will grant that motion in part, and deny that motion in part.
In particular, Van Gilder's felony escape conviction is admissible under Fed.
R. Evid. 609, but any reference to Van Gilder's other non-felony criminal
convictions, arrests, mental health struggles, or the lawsuit will be precluded
under Fed. R. Evid. 401 and 403.
C. Adverse Jury Instruction
Infogroup also moves to determine admissibility of evidence pertaining
to the adverse jury instruction. To be clear, the Court will be giving an adverse
jury instruction, but precisely how the Court will instruct the jury on the
adverse inference is a matter the Court will take up with jury instructions. The
Court will, however, provide the parties with some guidance as to the
principles that will govern that instruction. To begin, the language of the
adverse inference will not instruct the jury that they "must" determine that
the destruction was intentional, nor will the jury be informed that the Court
has found that the destruction was intentional. Instead, the jury will be
allowed, but not required, to draw an adverse inference. See Stevenson v. Union
Pac. R. Co., 354 F.3d 739, 750 (8th Cir. 2004).
And that presumption is subject to reasonable rebuttal. Id. In other
words, while the Court will not permit a complete retrial of the sanction during
trial, it would be unfairly prejudicial––and amount to reversible error –– if
DatabaseUSA were not allowed to put on some evidence as to why, in its view,
this database not longer exists. Id. So, the Court will deny Infogroup's motion
to the extent that Infogroup seeks a mandatory adverse inference: the adverse
inference will be permissive.
3

D. Testimony of Sue Gardner
Infogroup moves to exclude the testimony of Sue Gardner, whom the
defendants proffer as a copyright expert. Filing 404; see filing 405-2.
Specifically, Infogroup asserts that Gardner is unqualified to opine on the
matters to which her testimony is directed, that her methodology is not
sufficiently reliable, and that her opinion includes legal conclusions that are
not a proper subject for expert testimony. Filing 404 at 3-5. The Court agrees
on each point.
The opinion of a qualified expert witness is admissible if (1) it is based
on sufficient facts or data, (2) it is the product of reliable principles and
methods, and (3) the expert has reliably applied the principles and methods to
the facts of the case. Fed. R. Evid. 702. The expert's scientific, technical, or
specialized knowledge must also assist the trier of fact to understand the
evidence or determine a fact in issue. Id.
Those determinations, of course, depend upon the facts at issue. The
elements of copyright infringement are (1) ownership of a valid copyright and
(2) copying original elements of the copyrighted work. Cy Wakeman, Inc. v.
Nicole Price Consulting, LLC, 284 F. Supp. 3d 985, 990 (D. Neb. 2018). Copying
can be shown either by (1) direct evidence, or (2) access to the copyrighted
material and substantial similarity between the copyrighted work and the
allegedly infringing work. Id. As the Court understands Gardner's proffered
testimony, it does not implicate direct evidence (and, as explained below, the
few opinions she does proffer that might relate to direct evidence are not
appropriate expert testimony). So, her opinions relate to substantial similarity.
Determination of substantial similarity involves a two-step analysis. Id.
at 991. There must be substantial similarity both of ideas and of expression.
4

Id. Similarity of ideas is evaluated extrinsically, focusing on objective
similarities in the details of the works. Id. If the ideas are substantially
similar, then similarity of expression is evaluated using an intrinsic test
depending on the response of the ordinary, reasonable person to the forms of
expression. Id. In other words, the Court must first consider whether the
general idea of the works is objectively similar (the "extrinsic" portion of the
test) and then determine whether there is similarity of expression (the
"intrinsic" portion of the test). Id.
As a general matter, expert opinion evidence may be admissible in
connection with the first step of the substantial similarity analysis to show
similarity of ideas. Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120 (8th
Cir. 1987). But analytical dissection and expert opinion are not called for under
the second step in which substantial similarity of expression is measured by a
different standard—the response of the ordinary, reasonable person. Id.
Gardner is the "Scholarly Communications Librarian" at the University
of Nebraska-Lincoln. Filing 405-2 at 3. That job requires her to, among other
things, advise patrons regarding copyright infringement, and occasionally to
train faculty, staff, and students at UNL regarding copyright. Filing 405-2 at
3. Her educational experience includes graduate-level work in copyright from
Harvard Law School. Filing 405-2 at 4. In addition, Gardner has graduate-level
education in XML (a data markup language) instruction in research data
management, and undergraduate education in computer programming. Filing
405-2 at 4. And she has extensive experience with database creation, in
connection with library catalogs. Filing 405-2 at 4.
To be clear: the Court has no reason to question Gardner's competency,
or her expertise in either copyright law or databases. But her opinions about
copyright law are not a proper subject for expert testimony, and her opinions
5

regarding the parties' databases are primarily premised on evidentiary
deficiency, which is also not a proper subject for expert testimony. But
explaining that will require examining her opinions in more detail.
1. Whether Infringement was Committed
To begin with, Gardner was asked whether she had "an opinion
regarding whether any infringement was committed by Database in any of the
copyrights held by Infogroup and identified in the claims it asserts." Filing 4052 at 12. Gardner answered that question by addressing three types of alleged
infringement discretely: (a) computer code, (b) databases, and (c) websites.
(a) Computer Code
First, Gardner opined that she did "not see any evidence of copyright
infringement" of computer code by DatabaseUSA.com. Filing 405-2 at 14. But
the essential basis for that opinion was that DatabaseUSA.com uses "off-theshelf" software and that DatabaseUSA's employees explained their "database
development workflows" to her. Filing 405-2 at 14. So, Gardner concluded that
because Infogroup creates its own software but "DatabaseUSA modifies
periodically-updated third-party software using intricate workflows . . . there
is no conceivable way the two software suites" could be identical or
substantially similar. Filing 405-2 at 14-15. But that's, in essence, just
Gardner's opinion that DatabaseUSA's witnesses are credible—and that's not
a proper basis for expert opinion testimony. See Nichols v. Am. Nat. Ins. Co.,
154 F.3d 875, 884 (8th Cir. 1998).1

1

Nor, the Court notes, is there a clear connection between Gardner's primary expertise in

computer coding—an undergraduate course in Pascal programming—and the opinions

6

Gardner further grounds her opinion in the lack of evidence2 that the
particular software copyrighted by Infogroup was infringed—that is, that the
versions copyrighted (which she says are "presumably" modified regularly)
were also the ones infringed. Filing 405-2 at 15. And, she notes, a particular
section of code named "origin" is unremarkable because that's a common name
for a portion of code. Filing 405-2 at 15. Perhaps so. But it seems fairly selfevident that an opinion about whether computer code was copied requires
examination of the code. That could cut both ways: there may at some point be
a question, for the Court or the jury, whether Infogroup met its burden of proof,
with either direct evidence of copying or circumstantial evidence of some kind.
But Gardner's proffered testimony is really just an opinion regarding the
sufficiency of Infogroup's evidence, and that's not admissible.
(b) Databases
Next, Gardner opines that the evidence is insufficient to show that
Infogroup's copyrighted business database was infringed. Filing 405-2 at 16.
But the basis for that begins with examining the superficial features of each
database's interface. Filing 405-2 at 16. The Court is not persuaded that
choices of color and typeface are an appropriate part of the methodology for
assessing whether a copyrighted database has been infringed. Nor is the Court
persuaded that Gardner—who has demonstrated no particular expertise with

rendered here regarding software development. See Gable v. Nat'l Broad. Co., 727 F. Supp.
2d 815, 833 (C.D. Cal. 2010), aff'd sub nom. Gable v. Nat'l Broad. Co., 438 F. App'x 587 (9th
Cir. 2011); compare, e.g., SAS Inst., Inc. v. World Programming Ltd., 874 F.3d 370, 384 (4th
Cir. 2017), with Montgomery v. Noga, 168 F.3d 1282, 1303 (11th Cir. 1999).
2

Gardner reviewed a quantity of the evidence generated by discovery. Filing 405-2 at 27.

7

such design—is qualified to opine on such a basis, even if it was proper. See
Honeywell Int'l Inc. v. ICM Controls Corp., 45 F. Supp. 3d 969, 1008-09 (D.
Minn. 2014). Gardner does note differences in the search results in the
databases with an example search query—but then, without explaining the
relevance of those differences, swings back to differences in the interface, not
the data. Filing 405-2 at 17-18.
Gardner also, as above, expresses her opinion on the sufficiency of
Infogroup's evidence.3 Gardner is unpersuaded that infringement occurred,
without evidence of congruency in the databases or evidence showing that the
presence of Infogroup seeds in DatabaseUSA's data wasn't fairly compiled.
Filing 405-2 at 19. But again, Gardner's opinion as to whether Infogroup's
evidence is sufficient to carry its burden of proof isn't a question for an expert
witness. See Rottlund Co. v. Pinnacle Corp., 452 F.3d 726, 732 (8th Cir. 2006).
(c) Websites
Finally, Gardner opines that DatabaseUSA.com didn't infringe
Infogroup's websites. Filing 405-2 at 21-23. But as noted above, Gardner isn't
an expert on website design. See Honeywell, 45 F. Supp. 3d at 1009. An expert
in website design might be able to proffer testimony helpful to the trier of fact
about whether two websites, for instance, were similar in ways unnecessary
for functionality, or had unusual common features. Cf. Moore v. Columbia
Pictures Indus., Inc., 972 F.2d 939, 945 (8th Cir. 1992). But Gardner has no
such relevant experience. See Gable, 727 F. Supp. 2d at 833; see also Honeywell,
45 F. Supp. 3d at 1009.

3

Or, at least, the evidence she reviewed. The Court assumes, for purposes of this order, that

any relevant evidence was disclosed to the defendants and shown by them to Gardner.

8

2. Likelihood to Cause Confusion
Next, Gardner was asked for an opinion "concerning whether any actions
of Database would be likely to cause confusion with Infogroup or related
company products." Filing 405-2 at 23. But that's a subject that Eighth Circuit
precedent squarely precludes from being the subject of expert testimony. See
Hartman, 833 F.2d at 120; see also Rottlund, 452 F.3d at 731-32; Honeywell,
45 F. Supp. 3d at 1008-09.
3. Whether Truthful Statements Violate Copyright
Finally, Gardner was asked: "Assuming it is true that Vinod Gupta was,
in fact, the founder of both Infogroup and the involved subsidiaries or affiliates,
is the repetition of truthful statements to this effect an infringement on any
copyright?" Filing 405-2 at 24. Gardner's response was that they weren't,
because "facts are not copyrightable." Filing 405-2 at 24. But that's a legal
conclusion, premised on Gardner's knowledge of copyright law. It may be an
accurate conclusion, but it's one for the Court to make—or, if there are factual
disputes, for the jury to make, but after instruction from the Court, not an
expert witness. See Honeywell, 45 F. Supp. 2d at 1010.
In sum, for the reasons explained above, the Court finds that Gardner's
proffered opinions are inadmissible, either because she is intended to opine on
matters that are not proper subjects for expert testimony, or because she lacks
foundation to render those opinions. Infogroup's motion in limine seeking to
preclude Gardner's testimony will be granted.
E. Testimony of Michael O'Hara
Infogroup moves to exclude the testimony of Michael O'Hara. Filing 404
at 3. Infogroup objects to the portions of O'Hara's testimony which require
9

technical or specialized knowledge. In particular, Infogroup contends that
O'Hara has no education or experience "in creating, compiling, maintaining,
securing, licensing or purchasing a commercial business database[s]," nor does
he possess any particularized knowledge "in creating computer code that
supports a commercial business database" and as such, should be prohibited
from testifying on those topics.
The Court is not persuaded. The opinion of a qualified expert witness is
admissible if (1) it is based on sufficient facts or data, (2) it is the product of
reliable principles and methods, and (3) the expert has reliably applied the
principles and methods to the facts of the case. Fed. R. Evid. 702. The expert's
scientific, technical, or specialized knowledge must also assist the trier of fact
to understand the evidence or determine a fact in issue. Id. And O'Hara––who
holds his Ph.D. in economics––has significant experience in the compilation,
evaluation, and protection of databases. Filing 405-3 at 1. Specifically, O'Hara
has studied the methods of "implanting information in a database to 'mark' it
with a compiler's imprint for security sources." Filing 405-3 at 1. Thus, subject
to proper foundation at trial, the Court finds that O'Hara possesses the
requisite knowledge, expertise, and training, to testify to the process of data
compilation and seeding. Filing 405-3 at 2-3. DatabaseUSA's motion will be
denied at this point. The Court will, however, hear any renewed foundational
objections at trial.
F. Parties' Agreed Upon Motions
The parties also agreed, on the record, that certain motions in limine
should be granted. Specifically, the parties agreed that any reference to
statements made or offers exchanged in settlement and mediation discussions,
any claims previously dismissed or settled in this litigation, any previous Court
10

orders entered in this case, the lawsuit between DatabaseUSA and former
employee John Gorum, and the testimony of any representative of Lutz & Co.
will not be presented. See filing 404 at 1-3. Accordingly, those motions will be
granted.
G. Remaining Motions
Any remaining motions not yet ruled upon are overruled without
prejudice to reassertion at trial.
II. DATABASEUSA'S MOTIONS
A. Vinod Gupta
DatabaseUSA moves to exclude any evidence of defendant Vinod Gupta's
past misconduct. Specifically, DatabaseUSA seeks to preclude any reference to
the 2008 Securities Exchange Commission ("SEC") litigation, the SEC order
prohibiting Gupta from serving as an officer or director of a publicly traded
company, the shareholder litigation initiated against Gupta in his former
capacity as officer or director of Infogroup, the 2011-12 state litigation, and any
evidence of the financial circumstances surrounding Gupta's departure from
Infogroup Filing 338 at 2-4. According to DatabaseUSA, whatever relevance
this evidence may have is outweighed by its unfair prejudice. Fed. R. Evid. 403.
Infogroup, on the other hand, argues that this information is relevant so the
jury may adequately understand why Infogroup entered into a contractual
agreement to separate itself from Gupta (and why Infogroup paid Gupta a lot
of money to disassociate himself with the company).
And while the Court agrees that some reference to this evidence is
relevant, the Court also finds that allowing the introduction of the substantive
11

allegations underlying these proceedings would be unfairly prejudicial. Fed. R.
Evid. 403. So, the Court will draw a line: evidence that various complaints were
filed, the general allegations contained in those complaints, evidence that these
allegations made national news, and the total sum paid to Gupta by Infogroup
will be admissible, but evidence of the substance and nature of the misconduct
giving rise to those events is not admissible. By way of example, evidence that
the SEC filed a complaint alleging that Gupta failed to properly disclose
related party transactions and materially understated Gupta's compensation
is admissible, but evidence that Gupta purportedly misused corporate jets, or
was improperly reimbursed (to the tune of $9.5 million) for expenses associated
with his personal use of yachts, homes, automobiles, credit cards, and country
club memberships is not admissible.
The Court will, of course, give an appropriate limiting instruction
regarding the permissible purpose of this evidence. The Court will also hear
any relevance objections made at trial.
Relatedly, DatabaseUSA seeks to exclude "evidence of any relationship
between Vinod Gupta or [] DatabaseUSA.comLLC and William J. Clinton,
former President of the United States or former U.S. Secretary of State, Hillary
Clinton" and any similar relationships with political figures. DatabaseUSA
also seeks to exclude any evidence that legal services were provided to Mr.
Gupta by "Chief Justice John Roberts' law firm." Filing 338 at 4. Whatever
minimal relevance this evidence may have, it is outweighed by its unfair
prejudice. Fed. R. Evid. 403.
So, the Court will grant that motion in limine in part, and deny it in part,
as set forth above.

12

B. Robert Smith's Twitter Account
DatabaseUSA seeks to exclude evidence of DatabaseUSA employee
Robert Smith's "personal Twitter account." Filing 338 at 5. In particular,
DatabaseUSA objects to the introduction of evidence that Mr. Smith published
a short video to his personal Twitter account that referenced Salesgenie––a
name DatabaseUSA was prohibited from using by the 2012 settlement
agreement. But neither party could satisfactorily articulate the relevance or
prejudice of this evidence on the record. In light of that, the Court will grant
that motion as it is likely to confuse the issues and in turn, confuse the jury.
See Fed. R. Evid. 403.
C. Alleged Non-Disclosure of Evidence
DatabaseUSA objects to the presentation of evidence that was not
previously disclosed in discovery. Filing 407 at 1-3; see also filing 407 at 6-7. In
particular, DatabaseUSA seeks to exclude all exhibits concerning liability
other than those disclosed at the May 27, 2018 deposition, filing 406 at 1-2,
and all damages evidence that was not disclosed at John Hofman's deposition,
see filing 406 at 1. DatabaseUSA also seeks to exclude evidence of "any alleged
infringement on any copyrighted computer code" because, it claims, Infogroup
has not disclosed the copyrighted material allegedly infringed. Filing 407 at 6.
The Court notes that the purpose of discovery is to "make a trial less a
game of blind man's bluff and more a fair contest with the basic issues and
facts disclosed to the fullest practicable extent." United States v. Procter &
Gamble Co., 356 U.S. 677, 682 (1958). And the Court is unsure why (both sides)
have failed to disclosed pertinent information to one another. But, the Court
cannot address whether evidence was, in fact, properly disclosed without
13

knowing exactly what that evidence might be. So, with the exception of the
Rule 26 objections that are pending, this motion is denied. The Court is to be
advised at least 24 hours in advance of its introduction at trial that an exhibit
was not disclosed in accordance with Rule 26. The Court will, after sufficient
review, make its ruling.
D. Third-Party Complaints
DatabaseUSA moves to exclude "[a]ll evidence concerning complaints by
customers or prospective customers or vendors that they [were] confused or
misled

by

statements

or

advertisements

of

defendants

or

their

representatives." Filing 407 at 8. The Court cannot, however, consider whether
any evidence is hearsay, or subject to a hearsay objection, without hearing the
context of such evidence, and in particular whether any foundation has been
laid for an exception to the hearsay rule. So, DatabaseUSA's motion is denied
without prejudice to objection at trial.
E. Disparaging Statements
DatabaseUSA

seeks

to

exclude

any

purportedly

"disparaging"

statements made by Mr. Gupta prior to March 17, 2012. Filing 406 at 2. But
as the Court has already found, the relevant date for released claims is
September 7, 2011. Filing 223 at 6. And Infogroup represents no intent to
adduce evidence of disparaging statements made before that date. Accordingly,
DatabaseUSA's motion in limine will be denied.

14

F. Testimony of Amit Khanna
DatabaseUSA moves to exclude the testimony of Amit Khanna. Filing
338 at 6-17. Khanna is a "hybrid witness"––that is, some of the topics Khanna
will testify to involve scientific, technical, or other specialized knowledge, while
other portions of his testimony will be based on Khanna's own personal
knowledge and experience. DatabaseUSA objects to the portions of Khanna's
testimony which require technical or specialized knowledge. In particular,
DatabaseUSA contends that Khanna has "no knowledge or expertise
concerning compilation or compilation methods," nor does he possess any
particularized knowledge regarding "the use of seeds and triple verification
process" and as such, should be prohibited from testifying on those topics.
Filing 338 at 6-7.
The Court is not persuaded. The opinion of a qualified expert witness is
admissible if (1) it is based on sufficient facts or data, (2) it is the product of
reliable principles and methods, and (3) the expert has reliably applied the
principles and methods to the facts of the case. Fed. R. Evid. 702. The expert's
scientific, technical, or specialized knowledge must also assist the trier of fact
to understand the evidence or determine a fact in issue. Id. And Khanna, the
president of Local Marketing Solutions at Infogroup with a Master's degree in
computer science, has over fifteen years of experience in data compilation
techniques and database maintenance. Accordingly, subject to foundation at
trial, the Court finds that Khanna possesses the requisite knowledge,
expertise, and training, to testify to the process of data compilation and
seeding. Filing 340-9 at 1. DatabaseUSA's motion will be denied at this point.
The Court will, however, hear any renewed foundational objections at trial.

15

G. Trade Secret Evidence
DatabaseUSA seeks to exclude the admission of "all references to any
alleged trade secret or misappropriation other than to [Infogroup's] customer
list." Filing 406 at 2. On the record in the courtroom, Infogroup moved to
dismiss its misappropriation of trade secrets claim in its entirety. The Court
dismissed that claim with prejudice; and as such, that motion in limine is
dismissed as moot.
H. AEO Designations
DatabaseUSA seeks to preclude the admission of any documents that are
designated as "Attorneys' Eyes Only (AEO)". Filing 338 at 5-6, see also filing
407 at 12. The parties' agree that the proposed joint exhibit list does not include
any documents which remain AEO. Accordingly, this motion is dismissed as
moot.
I. Remaining Motions
Any remaining motions not yet ruled upon are overruled without
prejudice to reassertion at trial.
IT IS ORDERED:
1.

Infogroup's motion in limine (filing 404) is granted in part
and denied in part as set forth above.

2.

DatabaseUSA's motion in limine (filing 337) is granted in
part and denied in part as forth above.
16

2.

DatabaseUSA's motion in limine (filing 406) is granted in
part and denied in part as set forth above.

3.

Infogroup's misappropriation of trade secrets claim is
dismissed with prejudice.

Dated this 10th day of August, 2018.
BY THE COURT:

John M. Gerrard
United States District Judge

17